In Specsavers International Healthcare Ltd and others v Asda Stores Ltd, [2013] C 252/12, the Court of Justice of the European Union (CJEU) ruled that use of the combination of two separate registered trade marks in a complex trade mark may be sufficient to constitute genuine use and that use of a particular colour is relevant to assessing likelihood of confusion or unfair advantage.

BACKGROUND

Specsavers brought proceedings for trade mark infringement and passing off against Asda for Asda’s use of a logo that consisted of two ovals and the words "Asda Opticians" and posters bearing the straplines "Be a real spec saver at Asda" and "Spec savings at Asda". Specsavers relied on the word mark SPECSAVERS, a figurative mark consisting of two overlapping ovals and the word "Specsavers", and a wordless device mark consisting of two overlapping ovals. None of Specsavers’ marks were registered in a particular colour, but in practice both Asda and Specsavers used their respective logos in green.

The High Court of England and Wales allowed Specsavers’ claim in relation to the first slogan, but rejected Specsavers’ other claims and revoked the wordless device mark for non-use. The Court of Appeal partially allowed Specsavers’ appeals on infringement, but stayed Specsavers’ appeal in relation to the revocation order of the wordless device mark and in respect of the allegation that Asda’s logo infringed the mark under Articles 9(1)(b) and 9(1)(c) of Community Trade Mark (CTM) Regulation 207/2009/EC, referring a number of questions to the CJEU.

DECISION

Under Articles 15 and 51 of the CTM Regulation, a CTM may be revoked where the owner has failed to put the mark to genuine use for a continuous period of five years. The CJEU held, however, that the condition of "genuine use" could be fulfilled where a Community figurative mark is only used in conjunction with a Community word mark that is superimposed over the figurative mark, and the combination of those two trade marks is registered as a CTM, provided the differences between the form in which that trade mark is used and the form in which it is registered does not change the distinctive character of the trade mark as registered.

Where a CTM is not registered in colour, but the trade mark owner has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant part of the public with that colour or combination of colours, the colour or colours that a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage. The fact that the third party making use of a sign that allegedly infringes the registered trade mark is itself associated, in the minds of a significant part of the public, with the colour or particular combination of colours which it uses for the representation of that sign is also relevant.

COMMENT

The decision is favourable to brand owners, who should be able to maintain their device mark registrations and rely on them in infringement and opposition proceedings without fear of the marks being invalidated for non-use, provided that the distinctive character of the mark relied upon is not changed when used within the composite mark. Brand owners will also be relieved by the CJEU’s confirmation that a black and white registration for a trade mark is broad enough to provide protection for the mark in different colours.